Ex Parte Mazursky

Patent Trial and Appeal Board

Jul 5, 2016

13205173 (P.T.A.B. Jul. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/205, 173 08/08/2011
23446 7590 07/07/2016
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Richard B. Mazursky
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
24487US01 1417
EXAMINER
ISLAM, SYED A
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
07/07/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD B. MAZURSKY 1
Appeal 2014-004866
Application 13/205, 173
Technology Center 3600
Before JOHN C. KERINS, BRANDON J. WARNER, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard B. Mazursky ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's final rejection of claims 1-52. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the Real Party in Interest is PDQ Mazoo, LLC.
Appeal Br. 2.
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Application 13/205, 173
CLAIMED SUBJECT MATTER
The invention concerns a foldable indicator. Spec., Abstract. Claims
1, 22, and 41 are independent. Claim 1 is illustrative of the subject matter
on appeal, and recites:
1. An indicator integrated into an item comprising:
at least two separation edges, the first separation edge
having a first termination point and a second termination point
and the second separation edge having a third termination point
and a fourth termination point;
an aperture adjacent to the first and third termination
points; and
a score adjacent to the second and fourth termination
points,
wherein the indicator is separated from the item along the
first and second separation edges using the aperture and folded
over the score to an open position such that:
at least a portion of the indicator extends beyond a
perimeter edge of the item, and
a void, contiguous with the aperture, exists between
the first and second separation edges,
wherein the indicator is foldable over the score m an
inward direction and an outward direction.
Appeal Br. 36 (Claims App.) (emphasis added). Independent claims 22 and
41 also recite "a score." Id. at 39-43 (Claims App.).
REJECTIONS
The claims stand rejected as follows:
I. Claims 1, 5-9, 11-13, 18, 21-23, 27-31, 33, 34, and 40 under
35 U.S.C. § 103(a) as unpatentable over Spink
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Application 13/205, 173
(US 2008/0308621 Al, pub. Dec. 18, 2008) and Wyant
(US 5,540,513, iss. July 30, 1996).2
II. Claims 2--4, 10, 24--26, and 32 under 35 U.S.C. § 103(a) as
unpatentable over Spink, Wyant, and Kachel (US 5,256,130,
iss. Oct. 26, 1993).
III. Claims 14--20 and 35-39 under 35 U.S.C. § 103(a) as
unpatentable over Spink, Wyant, Burke (US 8,006,893 B2, iss.
Aug. 30, 2011 ), and Kachel.
IV. Claims 41, 44--48, and 52 under 35 U.S.C. § 103(a) as
unpatentable over Spink and Valencia (US 3,561,147, iss. Feb.
9, 1971).
V. Claims 42 and 43 under 35 U.S.C. § 103(a) as unpatentable
over Spink, Valencia, and Kachel.
VI. Claims 49 and 50 under 35 U.S.C. § 103(a) as unpatentable
over Spink, Valencia, and Kelley (US 8,024,882 B2, iss. Sept.
27, 2011).
VII. Claim 51under35 U.S.C. § 103(a) as unpatentable over Spink,
Valencia, and Wyant.
2 Although claim 31 is not listed in the heading, see Final Act. 5, claim 31 is
treated in the body of the rejection over Spink and Wyant. Id. at 6-7.
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ANALYSIS
Rejection I
Regarding independent claims 1 and 22, the Examiner finds that
Spink discloses indicator 108, which is folded over line 106 to an open
position. Final Act. 5. The Examiner finds that Spink fails to disclose, inter
alia, the claimed score, but finds that Wyant discloses "score 15." Id. at 6
(emphasis omitted). The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to modify Spink to include Wyant's "score line" to "provid[e] an easy
... folding mechanism with low manufacturing cost." Id.
Further, the Examiner finds that the "[O]ffice fails to see the
difference between score and a fold line. Appellant has no[t] provided any
definition of the term 'score' in the specification." Ans. 3. Therefore, the
Examiner interprets Wyant's "fold line 15" as a "score" because it performs
the same function. Id.
Appellant argues that Wyant' s fold line 15 "is structurally different
than a score." Appeal Br. 13-14. Appellant argues that the Specification
describes the claimed "score" as "a notched or grooved line, for example,
cut into a surface 116 of item 100." Id. at 14 (citing Spec. i-f 35). Appellant
contends that this description is consistent with the definition of "score"
provided by Merriam-Webster Online Dictionary, which defines the term as
"a line (as a scratch or incision) made with or as if with a sharp instrument."
Id. Finally, Appellant argues that Wyant itself "distinguishes between a fold
line 15 and a scored line 16." Id. at 14--15.
A preponderance of the evidence leads us to agree with Appellant and
conclude that the Examiner's interpretation of "score" as indistinguishable
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Application 13/205, 173
from Wyant' s fold line 15 is overly broad and unreasonable in light of
Appellant's disclosure. Ans. 3; Microsoft Corp. v. Proxyconn, Inc., 789
F.3d 1292, 1298 (Fed. Cir. 2015) (noting that the broadest reasonable
construction "'cannot be divorced from the specification and the record
evidence,' and 'must be consistent with the [construction] that those skilled
in the art would reach.' A construction that is 'unreasonably broad' and
which does not 'reasonably reflect the plain language and disclosure' will
not pass muster" (citations omitted)).
Appellant's Specification does not define explicitly the term "score."
See, e.g., Spec. i-f 35. Despite the absence of an explicit definition, the
Specification indicates the "score" includes a discrete structure about which
the claimed folding occurs. For example, the Specification describes that
"[i]n certain embodiments, a score 102 may be a notched or grooved line ...
cut into a surface 116 of an item 100." Id. This exemplary structure is
consistent with the dictionary definition of "score" provided by Appellant.
See Appeal Br. 14--15. Therefore, although the Specification does not define
precisely what structure is required by the claimed "score," a person of
ordinary skill in the art would understand the "score" to require some
structure that facilitates the claimed folding. See, e.g., Wyant, 2:27-31, 62-
67. It cannot be interpreted so broadly as to include any area of an item
upon which a fold could be made, such as an area lacking any structure to
facilitate a fold, as interpreted by the Examiner (i.e., a fold line). Ans. 3.
The Examiner finds that the prior art renders obvious claims 1 and 22
because there is no difference between a "score" and Wyant's "fold line 15."
Id. We disagree. Wyant discloses that "fold line 15" is merely the edge of
the card about which tabs may be folded. Wyant, 2:30-33 ("The tabs 12 are
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Application 13/205, 173
outwardly foldable about the fold line 15 which is collinear with the edge 14
of the card 10. This allows the tabs 12 to be folded.") (emphasis omitted).
Wyant does not disclose that fold line 15 includes any structure at all; it is
described merely as the line upon which a fold is made. Id. By interpreting
a "score" to be no different that "fold line 15," any other arbitrary foldable
portion ofWyant's card 10 would, when folded, produce a fold line or
"score" merely by virtue of the act of folding. Such an overly broad
interpretation is unreasonable in light of Appellant's Specification. The
claimed "score" requires more than the capability of being folded; it requires
some structure including at least a physical alteration to a region of the
material that facilitates, for the claimed invention, folding along such region.
For these reasons, we cannot sustain the Examiner's rejection of
claims 1 and 22 under 35 U.S.C. § 103(a) as unpatentable over Spink and
Wyant. The rejection of dependent claims 5-9, 11-13, 18, 21, 23, 27-31,
33, 34, and 40 also is based on this unreasonably broad interpretation and,
therefore, we cannot sustain the Examiner's rejection of those claims.
Rejections II and III
With respect to Rejections II and III, the Examiner does not rely on
Kachel or Burke to cure the deficiency in the combination of Spink and
Wyant, as discussed above. Final Act. 7-8. Therefore, we cannot sustain
the Examiner's rejections of claims 2--4, 10, 14--20, 24--26, 32, or 35-39.
Rejection IV
Regarding independent claim 41, the Examiner finds that Spink
discloses indicator 108, which is folded over line 106 to an open position.
Final Act. 9. The Examiner finds that Spink fails to disclose, inter alia, the
claimed score and indicator score, but finds that Valencia discloses "score
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36 ... [and] indicator score 28." Id. at 10 (emphasis omitted). The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to modify Spink to include
Valencia's "score line" to "provid[ e] an easy ... folding mechanism with
low manufacturing cost." Id.
Similar to the arguments made with respect to claims 1 and 22,
Appellant argues that "Valencia's item 28 is merely a 'fold line' and
Valencia's item 36 is merely described as an 'end of the tongue which is
attached and bendable."' Appeal Br. 25-26. Again, Appellant argues that
these regions do not include scores, as understood in light of the
Specification. Id. at 26-27 (citing Spec. i-f 57 (providing the same
description as paragraph 35)).
We agree with Appellant, for the same reasons discussed above with
respect to claims 1 and 22. Namely, the Examiner's construction of "score"
is unreasonably broad. A person of ordinary skill in the art would not
understand Valencia's "attached and bendable" tongue 36 to include a
"score," and would not understand Valencia's "fold line 28" to be an
"indicator score." See Valencia, 3: 5-13. These elements reflect merely
areas where a tab may be folded or bent. Id.
For these reasons, we cannot sustain the Examiner's rejection of claim
41 under 35 U.S.C. § 103(a) as unpatentable over Spink and Valencia. The
rejection of dependent claims 44--48 and 52 also relies on the same
unreasonably broad construction and, therefore, we cannot sustain the
Examiner's rejection of those claims.
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Rejections V-VII
With respect to Rejections V-VII, the Examiner does not rely on
Kachel, Kelley, or Wyant to cure the deficiency in the combination of Spink
and Valencia, as discussed above. Final Act. 10-12. Therefore, we cannot
sustain the Examiner's rejections of claims 42, 43, or 49-51.
DECISION
The rejections of claims 1-52 under 35 U.S.C. § 103(a) are
REVERSED.
REVERSED
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